Is your trademark strong and registrable?

The euphoric rush of positive emotions when starting your business is usually transferred into the creation of your brand under which you will market your new products or services. The very joy of seeing your mark done and the firm believe that it is the most unique thing anyone on the planet has ever made is the best motivator ever. And maybe some of you, like part of our clients, have experienced the nosedive of those euphoric emotions when suddenly out of nowhere your trademark registration is rejected or someone else has opposed it. „What happened?” - is the first question that comes to your mind and the answer to it is – your mark, although great in design and adored by your marketing team, was legally not registrable and weak.

To help you avoid future disturbances and costs we put together information on how to intelligently design your mark so that it can be strong regarding its protection and easily registered. We describe the different types of trademarks according to their level of legal protection starting from the strongest to the weakest ones. At the end we put a list of steps to follow during the process of designing your mark.

#1. Fanciful marks - the strongest of them all

Those are trademarks that are entirely made-up and have not existed before they were created. For example: KODAK for cameras, Pepsi for soft-drinks, GOOGLE for online services, ROLEX for watches, XEROX - for copiers, LEGO – for toys. Because those new words have never existed before (you created them) they cannot be mistaken or understood to mean something which makes your trademark naturally distinctive. The best thing of creating a fanciful mark is that its registration will not be obscured by rejection from the office or opposition by someone else – because you have created it yourself and was not existent before. Here we would say that the creation of a fanciful mark requires the highest level of creativity and more effort to introduce it to consumers and to build the brand and product recognition. That is so because, at first glance, the consumer may not immediately understand what the product or service is, or whether they have a need for it, and you have to educate them so they connect your mark with the services or products you provide. Once established those trademarks have enormous power and value that can be monetized. Even more, these marks enjoy the broadest scope of protection. This means that you may with great success oppose all registrations of similar marks like your fanciful one that are intended to be used with identical or similar goods or services like yours and thus you make sure that there is no dilution of the distinctiveness and value of your trademark.

# 2 Arbitrary marks– strong

In the design of those types of marks, known words or signs that have meaning are used in a way that is not logical to this meaning. For example: using the word “DOVE” (meaning a type of bird) for indicating soaps , the word “APPLE” (meaning a type of fruit) for indicating computers or image of a shell (meaning sea creature) for oil products. Arbitrary marks also typically receive broad and strong trademark protection as well as fanciful ones because they are not used by others on such completely disconnected goods or services relative to the traditional meaning of the word or phrase. Because arbitrary marks are formed of words or signs that consumers may already associate with another thing a need for some education of the consumers is required to develop the association between the arbitrary mark and the product or service but once established those trademarks have the same enormous power and value.

#3. Suggestive mark – in the middle of the spectrum.

In those marks word or sign is used that provides some hint or suggestion at the nature, quality or attributes of the product but do not describe those. For example: AIRBUS for airplanes (hinting that the product provides air transportation), NETFLIX for streaming services (suggesting that the services are provided using the internet) or SUNNY for lamps (hinting that the product is meant to bring light). Frequently, companies believe that a suggestive mark would make the best trademark. That is so, because they possess an inherent element of sales appeal and will require less education of the public than fanciful or arbitrary marks. A disadvantage to suggestive marks is that they may be entitled to less-extensive and weaker protection than fanciful or arbitrary marks because there is a higher likelihood that someone else may be using a same or similar trademark suggesting the same or similar goods (e.g., “air” would be a common word in association with airplanes, or bio or eco in association with ecologically compliant products). Accordingly, there is more risk involved that the trademark may overlap with another’s trademark rights. And as such the greater amount of oppositions are in connection with suggestive trademarks.

#4 Descriptive marks – entering the danger zone

Descriptive marks merely describe some feature of the product or service in question like its quality, type, efficacy, use, shape, quantity, intended purpose, value, raw material, origin, place of sale, location of provision of services, time of production etc. Examples: SWEET for chocolate describes a quality of the product and will be rejected as it would be considered unfair to give any single chocolate manufacturer exclusivity over the word sweet for marketing its products. Another example are qualitative or laudatory terms such as Rapid, Classic, Innovative which may also be rejected unless they are part of otherwise distinctive mark. This type of mark is one that companies often think of initially when trying to identify a new trademark for a product or service, but ultimately, is too weak to be considered a trademark under the applicable law, and is difficult or virtually impossible to register as such. For marketing purposes it would be easy to have a mark that says upfront what you are selling. But in principle descriptive trademarks cannot be owned by one company to the exclusion of others. There is however a possibility of a descriptive trademark to be registered in some instances if it acquires secondary meaning. This means that if a descriptive word or sign is used and advertised exclusively as a trademark for a sufficient period of time, it may, in addition to having the primary meaning that is descriptive of the product, come to identify the mark as being associated with a single source of origin for that product. Examples of descriptive words that have acquired secondary meaning and become protectable as trademarks are SHARP for televisions and HOLIDAY INN for hotel services.

NOTICE: How descriptive and suggestive trademarks differ. Descriptive trademarks immediately give an idea of what the goods or services are, while suggestive trademarks hint to the goods or services. For example, the word “bronzer” for suntan oil would be descriptive of an oil that helps bronze the skin and wouldn’t be registered alone as a trademark for those goods, while Coppertone is a suggestive, registered trademark for sun-tanning products.

#5 Genetic signs - the no-goers

This type of mark is not actually considered a trademark. A generic word is what the public understands to be the common name of the product or service in question—for example, “clock” is a generic word for timepieces or Chair for a chair. Similarly Apple would be a generic term for marketing apples but as we saw above it is arbitrary for marketing computers. Generic words or phrases are not registrable or protectable in relation to the products or services they signify.

IMPORTANT NOTICE. A term that was not generic originally can, under certain circumstances, become generic when a majority of the relevant consuming public comes to consider it the name of the product. Examples of originally valid trademarks that have become generic in many jurisdictions – where they are no longer protected – are “ASPIRIN”, used to be owned by Bayer or “ESCALATOR,” which used to be a trademark owned by Otis Elevator. Those marks were used incorrectly and repeatedly as a noun, and their respective owners lost the rights to claim them as trademarks.

#6. THINGS YOU CAN DO WHEN DESIGNING YOUR MARK

1. A primary rule to keep in mind when you are trying to create a new trademark is to remember that the purpose of a trademark is to identify the source or origin of a product or service; it is not to identify the product/service itself. Avoid using words or signs that directly describe the quality, type, efficacy, use, shape, quantity, intended purpose, value, raw material etc. of your products or services.

2. If you go for a suggestive trademark try to make a couple of levels of abstractions (mental connections) before consumers come to the meaning (description part) of your mark. NOTICE: When doing a suggestive mark there should be no unintended secondary meanings or undesirable connotations with the words or signs used in it.

3. Avoid similarities with other existing marks. For this you need to conduct a mark search which we have described here. Also try to avoid making your mark similar to famous trademarks, or marks that are known in the particular industry, product, or service area of competitors to your product or service.

4. Another factor to consider when creating your trademark is whether you plan to eventually be in foreign markets. If yes, then you may want to consider whether your new trademark has a meaning in a foreign language that would be undesirable and make the registration in such a country very difficult or impossible. For example In Spanish-speaking countries, the Mitsubishi Pajero is known as Mitsubishi Montero. It was first named Pajero after the pampas cat (leopardus pajeros), but the name was soon dropped, because it indeed means something entirely different in many Spanish-speaking countries.

5. Make sure that your trademark is easy to read, write, spell and remember and is suitable for all types of advertising media.

6. Check whether the corresponding domain name is available for registration. Also check whether the corresponding user names are available for the relevant social media website you will use.

7. Last but not least while creating your new trademark coordinate the project between all concerned - marketing, advertising, public relations and legal trademark professionals. Working together is essential to create a strong trademark and enduring trademark strategy. If you outsource the creation of your trademark, clarify the copyright ownership in the agreement with the creators.

Summery

We hope the information above will help you in the process of creating your trademark. Below is a compliment from us whcih you can download and use to remind yourself which are the strongest and weakest types of makrs. You can also book a consultation with trademark attorney regarding your trademark registration or check out our trademark services.